UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`APPLE INC.,
`Petitioner,
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`vs.
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`UNILOC 2017 LLC,
`Patent Owner.
`_________________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`_________________
`
`Record of Oral Hearing
`Held: December 4, 2018
`_________________
`
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, AND
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on December 4, 2018,
`commencing at 12:07 p.m., at the U.S. Patent and Trademark Office, Texas
`Regional Office, 207 South Houston Street, Suite 159, Dallas, Texas 75202.
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`APPLE INC.,
`Petitioner,
`
`vs.
`
`UNILOC 2017 LLC,
`Patent Owner.
`_________________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`_________________
`
`Record of Oral Hearing
`Held: December 4, 2018
`_________________
`
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, AND
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on December 4, 2018,
`commencing at 12:07 p.m., at the U.S. Patent and Trademark Office, Texas
`Regional Office, 207 South Houston Street, Suite 159, Dallas, Texas 75202.
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`Case IPR2017-01993
`Patent 9,414,199 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER, APPLE, INC:
` LUANN L. SIMMONS, ESQUIRE
` XIN-YI ZHOU, ESQUIRE
` MARC BREVERMAN, ESQUIRE
` O'MELVENY & MYERS, LLP
` Two Embarcadero Center, 28th Floor
` San Francisco, California 94111
`
`ON BEHALF OF THE PATENT OWNER, UNILOC 2017 LLC:
` BRETT MANGRUM, ESQUIRE
` ETHERIDGE LAW GROUP
` 1515 North Town East Boulevard
` Suite 138
` Mesquite, Texas 75150
`
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on December 4, 2018,
`commencing at 12:07 p.m., at the U.S. Patent and Trademark Office, Texas
`Regional Office, 207 South Houston Street, Suite 159, Dallas, Texas 75202.
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`P R O C E E D I N G S
` JUDGE QUINN: All right. Apologies for the slight
`delay. Let's call the case. This is oral argument for
`IPR2017-1993 concerning Patent No. 9,414,199. The caption is
`Apple, Inc. versus Uniloc 2017, LLC.
` The total argument time will be 45 minutes per side,
`starting with Petitioner, rebuttal by Patent Owner, and then
`respective parties will also have replies. Okay. So who is here for
`Petitioner?
` MS. SIMMONS: Good morning, Your Honor. Luann Simmons
`with O'Melveny & Myers for Petitioner Apple, and I'm joined by my
`client, Marc Breverman, in-house counsel at Apple, and my
`colleague from O'Melveny, Vincent Zhou.
` JUDGE QUINN: Welcome.
` And for Patent Owner, who do we have?
` MR. MANGRUM: Good afternoon, Your Honors. Brett
`Mangrum with Uniloc 2017, LLC, the Patent Owner. I will be
`presenting today.
` JUDGE QUINN: That would be Ms. Luann?
` MS. SIMMONS: Yes, Your Honor.
` JUDGE QUINN: Okay. Ms. Simmons.
` MS. SIMMONS: Ms. Simmons. Luann Simmons.
` JUDGE QUINN: Will you be presenting?
` MS. SIMMONS: Yes, ma'am.
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` JUDGE QUINN: Okay. All right. Just some housekeeping.
`I didn't see any objections to the demonstratives; is that
`correct?
` MS. SIMMONS: That is correct, Your Honor.
` JUDGE QUINN: Okay. All right. And I know that we
`have -- we don't have them displayed but that's okay, because each
`of my colleagues has an electronic copy. So if you can remember
`to speak out loud what slide number you're on, we can follow you
`right along. Okay?
` Petitioner, if you're ready.
` MS. SIMMONS: Yes, Your Honor.
` JUDGE QUINN: Just let me know how much time you want to
`reserve, and I will be keeping track with a timer.
` MS. SIMMONS: And, Your Honor, you said you have a copy
`of the slides. We have additional if you need them.
` JUDGE QUINN: I always welcome more paper, believe it or
`not. Thank you.
` Did you provide a copy to the court reporter?
` MS. SIMMONS: Yes, Your Honor, I did.
` JUDGE QUINN: And Patent Owner, did you provide a copy?
` MR. MANGRUM: Yes, Your Honor.
` JUDGE QUINN: How much time would you like to reserve?
` MS. SIMMONS: I would like to reserve 15 minutes, Your
`Honor.
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` JUDGE QUINN: Okay. Whenever you're ready.
` MS. SIMMONS: Thank you.
` Good afternoon, Your Honors. Luann Simmons for the
`Petitioner, Apple. The key dispute that is presented to the Board
`in this review is a claim construction dispute. The parties
`dispute the proper interpretation of one term. The term is
`"predetermined maximum amount of time."
` Under the -- no other claim construction disputes exist.
` Under the plain meaning of that term, which is what
`Apple argues is the correct interpretation, there is no dispute
`that all claims of the '199 patent are obvious based on
`Petitioner's grounds 1 and 2 presented in the petition. But even
`under the Patent Owner's proposed narrow construction of the
`disputed term, the Board should still find that all claims are
`invalid -- of the '199 patent are invalid under Apple's third and
`fourth grounds presented in the petition.
` The record evidence, we submit, shows two things: Number
`one, that the plain meaning should be applied to this disputed
`term, and number two, that the plain meaning should not be
`narrowed in the way that the Patent Owner has proposed. In its
`institution decision, the Board preliminarily agreed with Apple's
`interpretation of the plain meaning of this term.
` Now, the Board did note, of course, that the record was
`not yet complete at that point. Well, the record is now complete,
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`and in the interim time, the Patent Owner has not added any
`evidence to the record at all, certainly no evidence to support
`the Patent Owner's proposed narrow construction. And, in fact,
`the Petitioner --
` JUDGE QUINN: If the Patent Owner is relying on plain
`and ordinary meaning as well, why would we need additional
`evidence outside of the record that we have now?
` MS. SIMMONS: The Patent Owner has proposed an actual
`construction. The Petitioner is relying on the plain and ordinary
`meaning. And the Petitioner did present additional evidence to
`the Board since the institution decision. The Petitioner provided
`the unrebutted expert testimony of its expert, supporting what a
`person of ordinary skill in the art would understand to be the
`plain and ordinary meaning of this disputed term. And that
`evidence is unrebutted. The Patent Owner did not even
`cross-examine Apple's expert.
` JUDGE QUINN: Okay. But if we disagree with you and find
`the plain and ordinary meaning of the claims that you are
`proposing is untethered to the specification, right, what would
`preclude us from relying on Patent Owner's evidence that the
`intrinsic record supports their construction?
` MS. SIMMONS: Nothing, Your Honor. But the intrinsic
`record actually supports not -- does not support the Patent
`Owner's proposed narrowing of the term, and instead, supports the
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`plain and ordinary meaning that's proposed by Apple and that the
`Board preliminarily found in its institution decision.
` JUDGE QUINN: Okay. But even though we made a
`preliminary decision, now that we're more informed and we have a
`lot more meat onto the arguments and have had more time to review
`the case, we can certainly go either way.
` MS. SIMMONS: Absolutely. Absolutely. My only point is
`that the evidence is essentially the same except for the fact that
`the Petitioner has, in fact, added additional evidence to support
`the interpretation of the plain meaning of this disputed term as
`Petitioner has proposed. So, in fact --
` JUDGE BEGLEY: How would Patent Owner (indiscernible) it’snot
`just Petitioner; is that correct?
` MS. SIMMONS: The Patent Owner did not submit additional
`evidence. The Patent Owner did further argue its proposed
`construction by citing to additional evidence within the intrinsic
`record, yes, that is correct. But the Patent Owner did not submit
`any expert testimony regarding what the person of ordinary skill
`in the art would understand the plain meaning of the term to be.
` JUDGE QUINN: Now, we understand your proposed
`interpretation of the “predetermined maximum amount of time” to be
`so broad as to not limit that time to a time window that starts at
`the present time, whatever present time may be; that it could
`encompass something that starts in the future, a time range that
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`begins at some point in the future. What is your best support in
`the specification for that proposition?
` MS. SIMMONS: Your Honor, I would actually start with
`the claim language itself. So the claim language -- and let me
`direct your attention to --
` JUDGE QUINN: Well, I asked you about the specification
`too.
` MS. SIMMONS: Absolutely, Your Honor.
` JUDGE QUINN: That's what we want to focus on.
` COURTROOM STAFF: Stand right here at the podium when you
`speak and press that.
` MS. SIMMONS: Oh, sorry. Apologies.
` If I can direct Your Honors' attention to Apple slide
`15, Apple slide 15 includes some language from the Board's
`institution decision that, in fact, is quoting from the
`specification, and this portion of the specification, as well as
`an additional portion that I can read to Your Honors from the
`specification, provides support for the fact that the claims
`should not -- the scope of the claim and the scope of this
`particular term should not be limited to starting only in the
`present time.
` So as the Board noted in its institution decision, the
`claims do not refer to present time or limit the scope. And then
`on page 9 of the institution decision, the Board cited from and
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`quoted from column 4, lines 34 through 37, and column 4, lines 44
`through 47 from the specification that indicate that the
`specification refers to predicting whether the user device will
`be, quote, "in any of a number of locations in the future within a
`predetermined amount of time," end quote, and quote, "is likely to
`be in any of a number of locations within a predetermined amount
`of time in the future," end quote.
` JUDGE QUINN: Well, couldn't we read those portions of
`the specification to mean that the claims foresee that whatever
`time window we have there -- the end of that time window is, of
`course, at some point in the future because that's where the user
`device “will be,” but it doesn't preclude one way or another? Is
`that what you're saying?
` MS. SIMMONS: Yes, Your Honor. In fact, neither the
`specifications nor the claims preclude the interpretation proposed
`by Apple. There's nothing -- there's no express statement.
`There's no express disclaimer or definitional statement that
`would preclude an understanding of "within the predetermined
`maximum amount of time" being a time window that not only ends in
`the future but starts in the future.
` There are embodiments within the specification, in fact,
`that disclose time windows that start at a time in the future, not
`at a time in the present. And I can point to those if that would
`be helpful.
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` JUDGE QUINN: Yes, thanks, mm-hmm.
` MS. SIMMONS: If I can direct the Court's attention to
`Apple slide 12. On slide 12, underneath the summary of the claim
`dispute, we have included two examples that are disclosed in the
`specification. The example on the left is what we refer to as the
`department store example, and this is where a manager of a
`department store wants to try to entice potential customers who
`might be in the nearby vicinity and might be headed to a
`competitor store to instead come to the manager store.
` The specification describes that the time period that's
`relevant to the prediction and the delivery of the information may
`be set to be within one hour, but in the last sentence, the
`manager -- the disclosure includes that the manager may also set
`the time period to be only during hours at which the new
`department store is open.
` JUDGE BEGLEY: Can you explain how that last sentence
`(indiscernible), which I believe is lines -- let's see -- 61 to 64,
`column 1, how does that relate to the "predetermined maximum amount
`of time"?
` MS. SIMMONS: Your Honor, our position is that this is
`an example of a predetermined maximum amount of time that the
`manager could have set as a criteria for when -- for the
`prediction, meaning that, if the prediction system decides that or
`predicts that the potential customer will be in the predetermined
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`location, which is the nearby vicinity, during the open hours of
`the store, then the ad or the promotional code will be delivered.
` JUDGE BEGLEY: I understand it's your position, but can
`you clarify, based on the context and the language here, how
`you're reaching that position, what language supports -- that
`this sentence about "only during hours at which the new department
`store is open" is a "predetermined maximum amount of time"?
` MS. SIMMONS: Well, Your Honor, up -- a little bit
`higher, a few lines up in the disclosure, the specification
`describes the process of the manager essentially setting the
`criteria that is going to be associated with the information to be
`delivered and then compared against the predictions and that the
`first version that is described is predicting that someone within
`a 50 percent chance will be likely to be within a point that's
`near the competitor store within one hour and that's the condition
`that should be used to send -- to decide whether or not to send
`the ad.
` And so this matches up with or seems to disclose the
`claim limitations that describe setting the criteria that's
`associated with the information to be sent and then comparing the
`prediction against that criteria. So that's the first way it's
`described.
` And then it goes on to say or, essentially, the manager
`could also --
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` JUDGE BEGLEY: But it doesn't say "or."
` MS. SIMMONS: It doesn't say "or." I'm sorry; that's my
`interpretation. But it says that they could also have specified
`the days and times to be during the open hours of the store.
` JUDGE QUINN: See, that's the problem I have with that
`reading . . . is that this example seems to be stating that there is a
`way to do it: to have this one hour to send the promotional code
`if you specify this 50 percent predetermined minimum likelihood.
`Because that says "in addition," then you can also specify
`the times and days at which the action is applicable. It doesn't
`say you are replacing it or, as an alternative to the one hour
`maximum amount of time, that you will set this range. Never mind
`that that sentence actually says that those times and dates are
`times in which the actions are applicable, which doesn't seem to
`have anything to do with the actual prediction.
` MS. SIMMONS: So let me back up. The prediction is
`performed based on -- according to the claims and the
`specification, is performed based on a review of the location
`history. So the prediction itself is not based on the criteria
`that is set for determining whether or not to deliver the ad or
`whatever the information is.
` So the process is that the system retrieves the criteria
`from a data record, and the criteria includes the predetermined
`locations, the predetermined maximum amount of time, and the
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`required likelihood of the prediction being accurate. It
`retrieves those three criteria, performs its analysis of the
`location history to make a prediction, and then compares the
`prediction against those three criteria. And if the prediction
`meets with those three criteria, the information is delivered. So
`the criteria is not what the prediction is based on. The
`prediction is based on -- and this is described throughout the
`specification as being what was inventive about the claimed
`invention. The prediction is based on having this accumulated
`this set of time-stamped location entries for the device.
` So it's collected over time, the location of the device,
`and stamped it with the time entries. It goes back -- the system
`then goes back and can review that time history -- I'm sorry;
`time-stamped location history to make predictions about where the
`device will be. Having made the prediction, it compares that
`prediction against the criteria, and if they line up, the
`information is then delivered.
` JUDGE QUINN: Right. But that supports what I just
`said, that the prediction is being based on three things:
`Predetermined location, predetermined maximum amount of time, and
`the likelihood. Right?
` MS. SIMMONS: The comparison of the prediction against
`the criteria is based on those three criteria, but the prediction
`itself, it is -- is not based on the criteria. The prediction is
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`based on having reviewed the location history.
` JUDGE QUINN: The claim language says "predicting
`whether the user device will be at any one or more predetermined
`locations within the predetermined maximum amount of time, with
`at least the predetermined likelihood."
` MS. SIMMONS: Correct.
` JUDGE QUINN: That must mean that the predicting is
`being used -- the predicting uses those three things that are in
`the record to predict whether that will be something that triggers
`an action.
` MS. SIMMONS: The prediction is compared against those
`three criteria. So if the prediction shows that the user device
`will be at these -- will meet these three criteria, then the
`action is performed.
` JUDGE QUINN: And if we were to agree with your
`interpretation of that, how does the specific dates and times fit
`into the -- either the predicting step or this comparison step
`you're talking about?
` MS. SIMMONS: The days and times that are specified in
`this example -- this embodiment provided in the specification --
`those are examples of what the predetermined maximum amount of
`time could have been set to be. So recall that the predetermined
`maximum amount of time is one of the pieces of information stored
`in the data record that's associated with the information to be
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`delivered. That information could be a time period starting from
`the present and extending out for some duration, or it could be as
`shown in these examples, a time period that starts in the future
`and ends in the future.
` But I would add to that that even, if the Board
`disagrees with Apple's interpretation of those examples of setting
`a future time window, essentially, there is nothing in the
`specification that would support narrowing the scope of the claim
`or the scope of this term to that specific embodiment and that
`specific interpretation of that embodiment. There's no language
`that would support narrowing the scope that way either in the
`specification or the claims or the file history.
` JUDGE QUINN: Well, that's your contention.
` MS. SIMMONS: Correct. That's correct.
` JUDGE QUINN: Now, can you tell us about the second
`embodiment that's on the slide 12.
` MS. SIMMONS: Thank you, Your Honor. On slide 12, the
`second embodiment, then, is -- similarly, it's describing now a
`restaurant that's within the department store, and this embodiment
`indicating that as one of the examples of a predetermined maximum
`amount of time that can be set for determining when to deliver --
`how or under what circumstances, I should say, to deliver the
`promotional code, the window can be set, as it says in the last
`sentence, to be weekdays from 11:30 a.m. to 2:00 p.m.
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` JUDGE BOUDREAU: I don't see anything in that second
`passage about a "predetermined maximum amount of time." Where are
`you -- what are you looking at in that second passage that's
`linking this passage with a "predetermined maximum amount of time"?
` MS. SIMMONS: That's an excellent point, Your Honor.
`Neither of these examples use that specific claim term language,
`in fact. So what we are doing is understanding that these
`examples to be describing what is disclosed in the specification,
`and given the nature of the claim and the claim language itself
`and the examples provided, it is our interpretation that under
`just a plain reading of these words, the time window of weekdays
`from 11:30 to 2:00, it matches up with the predetermined amount of
`time, because this is describing -- yes, Your Honor.
` JUDGE BEGLEY: You said that the portions of the
`specification that you're pointing to don't use the terminology
`"predetermined maximum amount of time," but at least the first
`column does use that term, just not in the sentence that you have
`highlighted. Can you explain how that doesn't undermine your
`position that you're trying to say that the highlighted last
`sentence of column 1, line 61 to 64, approximately, relates to the
`"predetermined maximum amount of time," but that terminology is used
`previously, just not in your sentence, the sentence that you're
`relying on?
` MS. SIMMONS: Understood. So this goes back to the
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`department store example. Correct, Your Honor?
` JUDGE BEGLEY: Yes.
` MS. SIMMONS: Yes. And our interpretation and our
`position regarding the appropriate interpretation of that section
`is that the previous sentences before the last sentence are
`describing one example of how this system can be implemented, and
`it specifically, as you note, calls out that the "within one hour"
`in the first iteration of the example is the "predetermined maximum
`amount of time" but then says that what we believe to be as an
`alternative, the manager could specify, instead of just the time
`period starting from the present and extending out to an hour,
`could, instead, specify a time period of open hours of the store,
`which would start sometime in the future.
` And there's nothing in the specification that would
`render that interpretation unreasonable, and so under broadest
`reasonable interpretation standard, it's Apple's position that the
`term cannot be read so narrowly as to exclude a future time
`window.
` Now, we obviously -- we don't disagree that it includes
`a window that starts in the present. Of course it does. But it
`also includes a time window that starts in the future.
` JUDGE QUINN: Now, what do you make of the contention
`that Patent Owner makes about what is disclosed in that summary of
`the invention, specifically column 1, lines 47 to 49, that states
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`"to make a prediction regarding future locations of the user
`device, the server considers the user device's location history in
`a current context."
` MS. SIMMONS: Yes, Your Honors. The current context,
`that is exactly what I was referring to earlier. The current
`context can be used when the system goes back and reviews the
`location history to make its prediction. Now, I will note, first
`of all, that this phrase "current context" does not exist in the
`claims at all, certainly not in claim 1 where a "predetermined
`maximum amount of time" is first claimed. But the specification is
`describing -- and the dependent claims sort of get at this idea,
`the specification is describing that, when the system goes back
`and reviewing the location history to make its prediction about a
`future location, it can essentially fine-tune or improve upon its
`prediction by considering the current context of the device.
` Now, claim 1 does not require that. It doesn't refer to
`anything having to do with current location or current date and
`time. So the system can work without considering the current
`location or the current date or time.
` JUDGE QUINN: This sentence is in the summary of the
`invention.
` MS. SIMMONS: Correct.
` JUDGE QUINN: And at the end of which, it actually
`specifically says that the purpose of the invention is to offer an
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`alternative trip to the user -- that the user can take rather than
`the trip typically taken in the current context.
` MS. SIMMONS: That is correct.
` JUDGE QUINN: So it seems like it's relevant. Whether
`it's in the claim or not, we decide that, but what you make out of
`that particular disclosure.
` MS. SIMMONS: Absolutely. So, again, claim 1 is broader
`than a prediction based on a consideration that includes the
`current context. Claims 2, 3, 4 and 5 then begin to integrate in
`this idea of current context. But even if claim 1 did consider
`the current context, the claim and the quote that Your Honor just
`gave from the specification is indicating that the current context
`is considered when reviewing a location history to make the
`prediction about a future location. The claim does not say nor
`does the specification say that the current date and time is
`somehow considered when comparing against the predetermined
`criteria that are set in the data record associated with the
`information to be delivered.
` So you can imagine that, if I'm going back and looking
`at any time-stamped location history over time, I can make a
`prediction not knowing where I am now or not knowing what date and
`time it is about where I might be on Tuesday, but the prediction
`would obviously be better if I considered what the current day is
`and what my current location is.
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` So that is what the specification is describing, and
`that is what is claimed in the dependent claims. The dependent
`claims start to bring in this idea of considering the current date
`and time and considering the current location, which is the
`current context. Claim 1 does not make any reference at all to
`any retrieving of or determining or considering current date and
`time or current location.
` JUDGE QUINN: The examples that we have in the
`specification shed more light as to what this current context
`would be, so -- as used in conjunction with the predicting stuff
`to know when to start applying the predetermined maximum amount of
`time. Like, there is this example here that, if someone has lunch
`at the same place at least three days each workweek, typically at
`about 12:30, if the current time is 12 noon, then you can
`determine there's a likelihood of going there within the next
`hour. So it seems relevant that the current context would be used
`to know when to apply the predetermined maximum amount of time.
` MS. SIMMONS: The current context as Your Honor just
`described is relevant to the prediction about where the device is
`going to be and when it is going to be there. Absolutely. And
`that is what is set forth in the dependent claims. The dependent
`claims, for example, looking at claim 3, specifically describe
`analyzing the location history of the user device for day- and
`time-based patterns relating -- I'm sorry -- related to a current
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`time and a current day.
` So, again, the system is using the current context in
`these dependent claims and as Your Honor just quoted from the
`specification to analyze the location history. That is all that
`it is used for.
` Claim 3 depends from claim 1, and in claim 1, the very
`first limitation is where the system retrieves the predetermined
`maximum amount of time, among other -- the other criteria -- from
`a data record that is stored and associates this information with
`the information to be delivered.
` So the predetermined maximum amount of time has already
`been retrieved and is on standby, waiting to be used to see if the
`prediction matches up with that predetermined criteria. So,
`again, the current context is helpful to the system in analyzing
`the location history and figuring out where the device will be,
`and if that prediction, then, matches up with what the
`predetermined maximum amount of time is, which was preset and
`stored in this data record, then the action -- and the other
`criteria are met as well -- then the action will be performed.
` So the current context is certainly relevant to the
`dependent claims, not to the independent claim, but not relevant
`to determining the scope of that criteria, specifically of the
`predetermined maximum amount of time.
` JUDGE QUINN: So you're saying that -- because -- we're
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`looking at a lot of advertisement patents; right? I mean, there's
`a lot of prior art here that is in that same field. There's some
`version of time that is relevant, which is -- relates to when the
`offer is valid or when a coupon -- when you're close to, you know,
`that particular location in other time periods such as, you know,
`breakfast time and lunchtime and things like that. But it seems
`to me the claims are only referring to the location of a user, not
`whether the offer is valid or whether it's breakfast or whether
`it's lunchtime. It's agnostic as to how that pertains to the
`sales event that's already set in the record. You now do the
`predicting, and the predicting is only caring about where you're
`going to be within that amount of time.
` So saying that things like setting up the operating
`hours of a location or when you're likely to be there at some
`point in the future next week doesn't seem to be germane to where
`you are going to be within an amount of time if you don't read in
`some point to start the calculation.
` MS. SIMMONS: The --
` JUDGE QUINN: Because these are method claims, so we
`have to understand how is the method being performed by --
` MS. SIMMONS: Absolutely. Absolutely. And, again, I
`would direct Your Honor's attention back to the claim language of
`claim 1, because the first step is that the method retrieves the
`criteria, and the criteria are predetermined locations,
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`predetermin
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